What is a patent?
What is patentable?
How do publications affect patentability?
When is an invention made?
How do you determine who should be listed as inventor?
When are patents legally enforceable?
How long does it take to get a patent?
A patent is a property right granted by a government that gives the owner of an invention the right to exclude others from making, using, offering for sale or selling or importing the invention covered by the patent into the country that granted the patent.
Only certain discoveries are patentable. Under U.S. patent law, a patentable invention is any new and useful process, machine, manufacture or composition of matter. The phrases “new” and “useful” have specific meanings in U.S. patent law. By “new” (or, “novel”), the patent law means that the invention must not have been previously patented, published, publicly used or publicly sold – either by the inventor or by any third party that may have developed a similar idea or discovery. The patent or publication that describes the invention is typically called “prior art.” A “useful” invention is an invention that actually works as described and is not for an illicit or illegal purpose.
In addition to being “new and useful,” an invention must also be “nonobvious” to be patentable. In other words, if, at the time of invention, the invention is so similar to something that has already been publicly described or used that the invention would have been obvious to a person having ordinary skill in the necessary art, it is considered obvious and unpatentable.
An invention must be “novel” in order to be patentable. An invention loses novelty if, before a patent application is filed, the invention is described in any publication or public presentation in sufficient detail to allow a person skilled in the relevant art to reproduce the invention based on that publication (typically referred to as an “enabling publication”).
The United States is unique in that it offers a grace period after publication occurs. If a patent application is filed within twelve (12) months of the enabling publication, a patent may still be secured in the United States. Most other countries require “absolute novelty,” meaning patent rights are lost as soon as the publication occurs. When determining the date of publication for an academic article, it is important to determine the earliest date the publication became publicly available. Frequently, articles are published on the web in advance of the printed journal. The date it was published on the web would be the publication date under U.S. patent law. If a patentable invention is described under a confidentiality agreement, that description is not considered an “enabling publication” under U.S. patent law.
The courts have defined two steps that are involved in making an invention: conception and reduction to practice. The point of conception is when the inventors first have a clear, definite picture of the invention in their heads. Conception is a mental process. To capture the date of conception, it is recommended that the inventors describe the idea in detail in a witnessed, dated laboratory notebook.
An invention is “reduced to practice” when the inventor has proven the invention actually works. If physical experiments or prototypes were used to show the invention works, then an “actual reduction to practice” has occurred. For example, a process has been successfully performed or a new composition of matter has been completely sythesized. “Constructive” reduction to practice is the rare instance where an inventor can prove the invention works without the need of experimentation or prototypes. It is difficult to obtain a patent if the invention is only constructively reduced to practice.
To have the best chance of securing strong patent protection (and the best chance of attracting a commercial licensee), inventions should be both conceived and reduced to practice.
Unlike authorship of academic articles, an “inventor” of a patent is a legal determination. An inventor is anyone that contributes to the conception of the invention. The contribution toward conception is an important point. For example, imagine that a professor has an idea for a new process and instructs the graduate student to conduct a specific experiment to prove it works. If the graduate student follows the instructions of the professor exactly and the experiment proves that the process works, only the professor is the inventor of the process. However, if the experiment is not successful and the graduate student independently decides to run the experiment at a higher temperature and the process actually works, then the student is a co-inventor. The professor conceived the basic idea of the process, but it would not work without the graduate student’s idea of running it at the higher temperature.
It is very important to list the correct inventors on a patent application, since both the failure to list an inventor on a patent and the inclusion of a non-inventor can be grounds to invalidate an issued patent. This article provides some helpful tips and more information on determining inventorship.
A patent application is not a legally enforceable patent. The patent application is simply a document requesting the government to give a patent to the invention’s owner. A patent is not legally enforceable until the government patent office actually issues a patent and the enforceability is limited to the claims that appear in the issued patent.
The patent prosecution process is lengthy and detailed. Once a patent application is filed, the government patent office will review the application and compare it against publications and previously issued patents. If the government believes that the invention has been described before or is obvious, it will issue an “office action” that rejects certain claims in the patent application, citing the relevant “prior art” that it believes would prevent a patent from being issued. The patent owner, with the assistance of specialized patent attorneys, must then present arguments to demonstrate why the prior art is not relevant and why the invention should be the subject of an issued patent – specifically pointing out potential errors and misunderstandings. There are often multiple rounds of these discussions and, at times, live interviews with the government’s patent examiner or appeals are required. As a result, it can take from 3 – 6 years to get a patent issued.